Section 17 of the Indian Patents Act provides for postdating of patent applications. The preamble to Section 17 clearly states that the provisions of Section 17 are subject to the provisions of Section 9, which means that all sub sections of Section 9 must be complied before implementing Section 17. Sub-section 1 of Section 9 clearly states that where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within 12 months from the date of filing of the application and if the complete specification is not so filed, the application shall be deemed to be abandoned. This clearly means that the powers of the Controller under Section 17 for postdating an application are fettered by the provision of Section 9(1) that a complete specification must be filed within 12 months from the date of filing of the application. This issue was considered in the case of Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23, 80 (1999), wherein the judge while considering the provisions of postdating clearly stated in paragraph 8 that “The aforesaid provisions make it crystal clear that postdating of the patent can be done only to the date of filing of the complete specifications”. This makes it clear that the date of the provisional specification cannot be postdated.
It was found that in several cases inventors / applicants are unable to provide sufficient data to file an adequate complete specification within 12 months of the filing date of the provisional specification. In such an event, a practice has arisen by which a formal complete specification is filed within the twelve months period. The date of the complete specification is then postdated. Thereafter the complete specification is converted to a provisional and further complete specification was being filed in respect of the complete specification (now converted to a provisional). The Patent Office now is no longer accepting the step of conversion under Section 9(3), which was originally filed as a provisional specification for conversion of a complete specification to a provisional specification. This can only be done in respect of a patent application which is accompanied by a complete specification in the first place and not of a complete specification which is filed in respect of an application which is accompanied by a provisional specification. Accordingly, therefore, in future, the mechanism of extending the time for filing a complete specification by a period of six months when information is not available at the twelve months threshold, will not be available if the application is accompanied by a provisional specification.
Under these circumstances, the only mechanism by which the change of date will be allowed is under Section 9(4) and the mechanism is as follows:
A complete specification must be filed within twelve months of the filing of the provisional specification. If the complete specification is filed well within the 12 months period, a request can be made to the Controller for cancelling the provisional specification and postdating this application to the date of filing of the complete specification.
In any event postdating cannot be done for a period greater than six months from the date of filing of the parent application.
When a provisional specification is filed, the only method to improve upon the document beyond twelve months is to file a complete specification and postdate the application for a maximum period of six months. An application under the PCT can be filed thereafter designating all countries including India and then filing a national phase in India based on that PCT. Care must be taken, however, that the priority application should be abandoned well within the eighteen months period to ensure that the parent application is not published which means that the national phase in India must be filed soon after filing of the international application under the PCT.